UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2014-01367
`U.S. Patent No. 6,009,469
`
`________________
`
`PATENT OWNER’S SUBMISSION OF BRIEFING FROM STRAIGHT
`PATH IP GROUP, INC. V. SIPNET EU S.R.O., No. 15-1212 (FED. CIR.)
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2014-01367
`U.S. Patent No. 6,009,469
`
`________________
`
`PATENT OWNER’S SUBMISSION OF BRIEFING FROM STRAIGHT
`PATH IP GROUP, INC. V. SIPNET EU S.R.O., No. 15-1212 (FED. CIR.)
`
`
`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`On March 27, 2015, the Board issued a Conduct of the Proceeding Order
`
`(the “Order”) in the above captioned case authorizing Patent Owner Straight Path
`
`IP Group, Inc. (“Straight Path”) to submit briefing in the pending Federal Circuit
`
`appeal StraightPathIPGroup,Inc.v.SipnetEU S.R.O., No. 15-1212 (Fed. Cir.),
`
`which is Straight Path’s appeal of the Final Written Decision in related case Sipnet
`
`EU S.R.O.v.StraightPathIPGroup,Inc., IPR2013-00246. Pursuant to the Order,
`
`attached as Attachment A is the Brief of Appellee Sipnet EU S.R.O. which was
`
`filed with the Federal Circuit on April 27, 2015. Attached as Attachment B is the
`
`Reply Brief of Appellant Straight Path which was filed with the Federal Circuit on
`
`May 14, 2015.
`
`Dated: May 20, 2015
`
`Respectfully submitted,
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Matthew Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`2
`
`
`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Submission of Briefing from Straight
`
`PathIPGroup,Inc.v.SipnetEU S.R.O., No. 15-1212 (Fed. Cir.) is being served
`
`by electronic mail on the following counsel for the Petitioners:
`
`Brian Erickson (Reg. No. 48,895)
`brian.erickson@dlapiper.com
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701-3799
`P: 512-457-7000 F: 512-457-7001
`
`Jeff Cole (Reg. No. 56,052)
`jeff.cole@dlapiper.com
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701-3799
`P: 512-457-7035 F: 512-457-7001
`
`Dated: May 20, 2015
`
`41574260v.1
`
`3
`
`/Matthew Durell/
`Matthew Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1615
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`
`
`Attachment A
`
`Attachment A
`
`
`
`Case: 15-1212 Document: 26 Page: 1 Filed: 04/27/2015
`
`2015-1212
`
`United'States'Court'of'Appeals'
`for'the'Federal'Circuit'
`
`STRAIGHT PATH IP GROUP, INC.,
`Appellant,
`
`v.
`SIPNET EU S.R.O.,
`Appellee.
`
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board, No. IPR2013-00246.
`
`BRIEF OF APPELLEE SIPNET EU S.R.O.
`
`
`
`
`
`
`
`
`
`SANJAY PRASAD
`PRASAD IP, PC
`221 Main Street #496
`Los Altos, CA 94023
`(650) 918-7647 Telephone
`
`PAVEL POGODIN
`TRANSPACIFIC LAW GROUP
`1 Daniel Burnham Court #914
`San Francisco, CA 94109
`(650) 954-6857 Telephone
`
`Attorneys for Appellee
`
`April 27, 2015
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`Case: 15-1212 Document: 26 Page: 2 Filed: 04/27/2015
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`CERTIFICATE OF INTEREST
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`Pursuant to Federal Circuit Rule 47.4, counsel of record for Appellee
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`SIPNET EU S.R.O. certifies as follows:
`
`1. The full name of every party represented by me is:
`
`SIPNET EU S.R.O.
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`2. The name of the real party in interest represented by me is:
`
`Not applicable
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`3. All parent corporations and any publicly held companies that own 10 percent
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`or more of the stock of the party represented by me are:
`
`VoIP Trade Limited !
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`4. The names of all law firms and the partners or associates that appeared for
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`the party now represented by me in the trial court or agency or are expected
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`to appear in this court are:
`
`• Kilpatrick Townsend & Stockton, LLP:
`o Paul C. Haughey
`o Michael T. Morlock
`
`• Prasad IP, PC:
`o Sanjay Prasad
`
`• Transpacific Law Group:
`
`2!
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`i
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`
`
`Case: 15-1212 Document: 26 Page: 3 Filed: 04/27/2015
`
`o Pavel Pogodin
`
`Dated: April 27, 2015
`
`Respectfully submitted,
`
`/s/ Sanjay Prasad
`Sanjay Prasad
`Prasad IP, PC
`221 Main Street #496
`Los Altos, CA 94023
`
`Pavel Pogodin
`Transpacific Law Group
`1 Daniel Burnham Court #914
`San Francisco, CA 94109
`
`Attorneys for Appellee SIPNET EU
`S.R.O.
`
`
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`3!
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`ii
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`Case: 15-1212 Document: 26 Page: 4 Filed: 04/27/2015
`
`TABLE OF CONTENTS
`
`Page
`CERTIFICATE OF INTEREST ......................................................................... i
`
`TABLE OF CONTENTS .................................................................................... iii
`
`TABLE OF AUTHORITIES .............................................................................. vi
`
`STATEMENT OF RELATED CASES ................................................................. viii
`
`I. STATEMENT OF JURISDICTION ................................................................. 1
`
`II. STATEMENT OF THE ISSUES .................................................................... 1
`
`III. STATEMENT OF THE CASE ...................................................................... 1
`
`
`A. THE ’704 PATENT .................................................................................. 2
`
`
`1. The ‘704 Patent Does Not Describe a Way To Determine
`Whether A Remote Process Is Online .................................................. 3
`
`
`2. The ‘704 Patent Does Not Describe Assigning Network
`Addresses To Individual Processes ...................................................... 6
`
`
`3. The ‘704 Patent Does Not Describe Establishing Network
`Connections Between Individual Processes ......................................... 7
`
`
`4. The ‘704 Patent Does Not Describe Determining Current
`Status ........................................................................................................ 8
`
`B. THE IPR PROCEEDINGS ....................................................................... 11
`
`IV. SUMMARY OF THE ARGUMENT ........................................................... 11
`
`V. ARGUMENT ................................................................................................. 12
`
`
`A. THE APPLICABLE STANDARDS OF REVIEW ................................. 12
`
`
`4!
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`iii
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`Case: 15-1212 Document: 26 Page: 5 Filed: 04/27/2015
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`B. THE CLAIM CONSTRUCTION STANDARD ...................................... 14
`
`C. THE BOARD CORRECTLY FOUND THAT THE NETBIOS
`AND WINS REFERENCES DISCLOSE THE CLAIMED
`“PROCESS” .................................................................................................. 15
`
`1. Straight Path’s Request For Construction Of The Claim Term
`“Process” Was Never Raised With The Board .................................... 15
`
`
`2. Straight Path’s Request For Construction Of The Claim Term
`“Process” Is Moot Because The Board’s Decision Is Consistent
`With Straight Path’s Requested Construction Of The Claim
`Term “Process” ..................................................................................... 16
`
`3. NetBIOS And WINS Both Disclose The Claimed “Process” .............. 17
`
`4. Construction of the term “Process” by this Court would be
`superfluous ........................................................................................... 19
`
`
`D. STRAIGHT PATH’S NEWLY PROFFERED REQUEST FOR
`CONSTRUCTION OF A TEMPORAL LIMITATION TO THE
`CLAIM ELEMENT “CONNECTED TO THE COMPUTER
`NETWORK” ............................................................................................ 19
`
`
`
`1. Straight Path’s Temporal Limitations Argument Was Not
`Raised To The Board ............................................................................ 19
`
`
`2. The Board Correctly Construed The Claim Element
`“Connected To The Computer Network” Not To Require A
`Determination That A Second Process Is Currently On-Line
`At The Time Of The Query .................................................................. 20
`
`
`3. NetBIOS and WINS Disclose Exactly the Same
`Registration and Deregistration Mechanisms Disclosed by
`the ‘704 Patent ...................................................................................... 26
`
`
`E. NETBIOS AND WINS CLEARLY ANTICIPATE OR
`RENDER OBVIOUS THE CLAIMS OF THE ’704 PATENT ............... 27
`
`
`
`5!
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`iv
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`Case: 15-1212 Document: 26 Page: 6 Filed: 04/27/2015
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`VI. CONCLUSION ............................................................................................ 28
`
`CERTIFICATE OF SERVICE
`
`CERTIFICATE OF COMPLIANCE
`
`6!
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`v
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`!
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`Case: 15-1212 Document: 26 Page: 7 Filed: 04/27/2015
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 13
`
`In re Baxter Int’l, Inc.,
`678 F.3d 1357 (Fed. Cir. 2012) .......................................................................... 13
`
`Smith & Nephew, Inc. v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013) .......................................................................... 13
`
`Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc.,
`574 U.S. ___ , 135 S. Ct. 831 (2015) ........................................................... 13, 14
`
`Cases
`In re Elsner,
`381 F.3d 1125 (Fed. Cir. 2004) .......................................................................... 12
`
`In re Gartside,
`
`203 F.3d 1305 (Fed. Cir. 2000) .......................................................................... 12
`
`
`
` Consol. Edison Co. v. NLRB,
`
`305 U.S. 197 (1938) ........................................................................................... 12
`
`
`
`
`
`
`
` Rapoport v. Dement,
`
`254 F.3d 1053 (Fed. Cir. 2001) .......................................................................... 13
`
`In re Cuozzo Speed Techs., LLC,
`
` 778 F.3d 1271 (Fed. Cir. 2015) ............................................................. 13, 14, 15
`
`
`
`
`
`
`
` NTP, Inc. v. Research in Motion, Ltd.,
`
`418 F. 3d 1282 (Fed. Cir. 2005) ......................................................................... 16
`
` CCS Fitness, Inc. v. Brunswick Corp.,
`
`288 F.3d 1359 (Fed. Cir. 2002) .......................................................................... 16
`
`
`
`
`
`Interactive Gift Express,
`256 F.3d 1323 (Fed. Cir. 2001) .......................................................................... 16
`
`!
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`7!
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`vi
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`Case: 15-1212 Document: 26 Page: 8 Filed: 04/27/2015
`
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 21
`
`
`
`
`
` Wang Laboratories, Inc. v. America Online, Inc.,
`
`197 F. 3d 1377 (Fed. Cir. 1999) ......................................................................... 25
`
`Statutes
`
`35 U.S.C. § 316(a)(11) .............................................................................................. 14
`
`
`vii
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`8!
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`Case: 15-1212 Document: 26 Page: 9 Filed: 04/27/2015
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`STATEMENT OF RELATED CASES
`
`Pursuant to Fed. Cir. R. 47.5(a), Appellee SIPNET EU S.R.O. (“Sipnet”)
`
`certifies that no other appeal from the same proceeding in the United States
`
`Patent and Trial Appeal Board (“PTAB” or “the Board”) is or was previously
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`before this Court or any other appellate court.
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`Pursuant to Fed. Cir. R. 47.5(b), the Court’s decision in this appeal may
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`affect the following judicial and administrative matters:
`
`• Petitions for inter partes review of the patent at issue in this appeal or of
`
`related patents:
`
`1. Petition for inter partes review of U.S. Patent No. 6,108,704 by LG
`
`Electronics, Inc., et al., IPR2015-00209 (filed on October 31, 2014);
`
`2. Petition for inter partes review of U.S. Patent 6,131,121 by LG
`
`Electronics, Inc., et al., IPR2015-00196 (filed on October 31, 2014);
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`3. Petition for inter partes review of U.S. Patent 6,009,469 by LG
`
`Electronics, Inc., et al., IPR2015-00198 (filed on October 31, 2014);
`
`4. Petition for inter partes review of U.S. Patent No. 6,108,704 by
`
`Samsung Electronics Co., Ltd., IPR2014-01366 (filed on August 22,
`
`2014);
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`5. Petition for inter partes review of U.S. Patent No. 6,131,121 by
`
`Samsung Electronics Co., Ltd., IPR2014-01368 (filed on August 22,
`
`2014);
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`viii
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`9!
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`Case: 15-1212 Document: 26 Page: 10 Filed: 04/27/2015
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`6. Petition for inter partes review of U.S. Patent No. 6,009,469 by
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`Samsung Electronics Co., Ltd., IPR2014-01367 (filed on August 22,
`
`2014).
`
`• United States District Court actions involving the patent at issue in this
`
`appeal and related patents:
`
`1. Amazon.com, Inc. v. Straight Path IP Group, Inc., C.A. No. 5:14-cv-
`
`04561, United States District Court for the Northern District of
`
`California (filed on October 13, 2014);
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`2. Straight Path IP Group, Inc. v. Samsung Electronics Co., Ltd. et al.,
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`C.A. No. 6:13-cv-00606, United States District Court for the Eastern
`
`District of Texas (filed on August 23, 2013); case stayed pending the
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`outcome of this appeal and PTAB Case Nos. IPR2014-01366;
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`IPR2014-01367; IPR2014-01368 (Dkt. No. 109);
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`3. Straight Path IP Group, Inc. v. VIZIO, Inc. et al., C.A. No. 1:13-cv-
`
`00934, United States District Court for the Eastern District of Virginia
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`(filed on August 1, 2014); case stayed pending the outcome of this
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`appeal and PTAB Case Nos. IPR2015-00196; IPR2015-00198;
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`IPR2015-00209 (Dkt. No. 183).
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`
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`Case: 15-1212 Document: 26 Page: 11 Filed: 04/27/2015
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`I. STATEMENT OF JURISDICTION
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`Straight Path provides a correct statement of jurisdiction.
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`II. STATEMENT OF THE ISSUES
`
`1. Whether Straight Path, by failing to raise its currently proffered
`
`claim constructions to the Board, has waived such constructions and is now
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`precluded from asserting such constructions with this Court.
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`2. Whether the Board correctly found that the NetBIOS and WINS
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`references disclose the claimed “process,” in view of the fact that (i) operation
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`of every computer system necessarily involves a processing unit as well as one
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`or more processes executing on this processing unit and that (ii) the processing
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`unit by itself cannot communicate without an executing process.
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`3. Whether the Board correctly construed “connected to the computer
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`network” in view of the fact that (i) the system described by the ‘704 patent does
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`not enable determination of whether the second process is currently on-line when
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`the first process queries if it is available to communicate and that (ii) the system
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`described by the ‘704 patent keeps track of the online status in exactly the same
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`manner as disclosed in NetBIOS.
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`III. STATEMENT OF THE CASE
`
`As Straight Path notes, the Board in its Final Written Decision in IPR2013-
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`1!
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`Case: 15-1212 Document: 26 Page: 12 Filed: 04/27/2015
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`00246, found claims 1-7 and 32-42 of U.S. Patent No. 6,108,704 (“the ’704
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`patent”) unpatentable as anticipated and/or obvious in view of two references: (1)
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`Technical Standard Protocols for X/OpenPC Interworking: SMB Version 2 with
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`Appendices F&G (“NetBIOS”) and (2) Windows NT 3.5 TCP/IP User Guide
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`(“WINS”). (A0025).
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`The Board carefully analyzed the disputed claim terms and teachings of the
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`NetBIOS and WINS references, and the Board properly rejected Appellant’s
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`repeated attempts to import additional limitations into the claims at issue and to
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`minimize the clear teachings of the NetBIOS and WINS references. The Board’s
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`conclusions are clearly articulated and supported in its Final Written Decision and
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`in the record of the proceedings.
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`Accordingly, the Board’s Final Written Decision should be affirmed.
`
`A.
`THE ’704 PATENT
`The ’704 patent claims are directed to computers registering an Internet
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`address with a connection server over a network (e.g., Internet) so they can initiate
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`point-to-point communication (e.g., text messaging) with one another. (A0698-
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`A0700). Contrary to Straight Path’s contentions, the ’704 patent discloses
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`establishing network connections between processing units, and not individual
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`processes, as clearly and unambiguously described in the specification of the ’704
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`2!
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`Case: 15-1212 Document: 26 Page: 13 Filed: 04/27/2015
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`patent. (A0693 at 1:63-2:10; A0695 at 5:15-6:16; A0696 at 7:32-36; A0697 at
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`10:4-37). While the ‘704 patent claims extensively refer to a “process”, the ‘704
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`patent specification in contrast only uses the term “process” twice. Both of these
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`times, the reference to “process” is as a verb, not a noun. (A0694 at 3:37; A0696
`
`at 7:19). Moreover, contrary to Straight Path’s arguments, the ’704 patent does
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`not disclose a way to determine whether a specific process is currently running
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`and connected to a network. Instead, the database 34 of the connection server 26
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`described in the ’704 patent only keeps track of a past status of the processing unit
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`12 at the time of its registration with the connection server 26. (A0695 at 5:25-
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`42).
`
`In particular, with respect to Straight Path’s arguments: (i) the ’704 patent
`
`teaches tracking the status of processing units and not individual processes; and
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`(ii) the’704 patent does not describe a way to track the current status of a
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`processing unit, much less a process.
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`1.
`
`The ‘704 Patent Does Not Describe A Way To Determine
`Whether A Remote Process Is Online
`
`The ‘704 patent lacks the description of the features that Straight Path
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`attempts to assert as the point of novelty of the invention. Contrary to Straight
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`Path’s contention, the disclosure of the ’704 patent is devoid of any description on
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`3!
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`Case: 15-1212 Document: 26 Page: 14 Filed: 04/27/2015
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`how to determine a current status of process executing on a remote processing
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`unit. Straight Path points to this feature in an attempt to distinguish the
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`challenged claims from the teachings of WINS and NetBIOS and repeatedly
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`argues that the ’704 patent somehow enables a local process to query a current
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`status of the remote process. Specifically, Straight Path states that the ’704
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`patent enables “(1) determining whether a specific, targeted computer program is
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`currently running and connected to a network…” (Straight Path’s brief at 5). But
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`this statement is plainly inaccurate. Straight Path cites the following portions of
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`the ‘704 patent in support of this assertion: (a) A0693 at 1:63-2:10; (b) A0695 at
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`5:15-6:16; (c) A0696 at 7:32-36; (d) A0697 at 10:4-37; (e) A0698 at claims 1, 2,
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`4; (f) A0699 at claim 32; (g) A0670 at claims 33, 38. But the ‘704 patent contains
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`no disclosure in the above noted portions, or any other portion, to support Straight
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`Path’s assertion. This is hardly surprising as nowhere in the ‘704 patent
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`specification is the term “process” used as a noun. (A0694 at 3:37; A0696 at
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`7:19).
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`Straight Path’s citation (a) A0693 at 1:63-2:10 discusses determining online
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`status of a processing unit and not a process. It also makes no reference to
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`determining current online status. Straight Path’s citation (b) A0695 at 5:15-6:16
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`again discusses storing status of processing units in the database and establishing
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`4!
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`Case: 15-1212 Document: 26 Page: 15 Filed: 04/27/2015
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`a network connection between processing units and not processes. Straight
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`Path’s citation (c) A0696 at 7:32-36 reads, verbatim: “Realtime point-to-point
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`communication of audio signals over the Internet 24, as well as video and
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`voicemail, may thus be established and supported without requiring permanent IP
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`addresses to be assigned to either of the users or processing units 12, 22.” Again
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`there is no reference what so ever to “determining whether a specific, targeted
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`computer program is currently running and connected to a network…” as claimed
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`by Straight Path. Straight Path’s citation (d) A0697 at 10:4-37 again discusses
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`statuses and addresses of processing units and not of “specific, targeted computer
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`program[s].” Thus, apart from the challenged claims themselves, there is
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`absolutely nothing in the ‘704 patent that discloses “(1) determining whether a
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`specific, targeted computer program is currently running and connected to a
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`network…” as claimed by Straight Path. (Straight Path’s brief at 5). Straight
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`Path’s reliance on this “feature” to distinguish the pending claims from the WINS
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`and NetBIOS references is therefore ineffective as Straight Path’s arguments are
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`simply not supported by the ‘704 patent itself as well as the remainder of the
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`record in this Appeal.
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`Finally, Straight Path’s arguments regarding a “process” are rendered moot
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`because even if a “processing unit” of the ‘704 patent is deemed to be a “process”,
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`5!
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`Case: 15-1212 Document: 26 Page: 16 Filed: 04/27/2015
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`the ‘704 patent expressly admits that the current status of a processing unit cannot
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`be determined and only the past status information is being stored. Specifically,
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`at A0695, 5:39-42, the ‘704 patent teaches:
`
`The connection server 26 may use the timestamps to update the
`status of each processing unit; for example, after 2 hours, so that the
`on-line status information stored in the database 34 is relatively
`current. Other predetermined time periods, such as a default value of
`24 hours, may be configured by a systems operator.
`(Emphasis added).
`
`By describing that the on-line status of a processing unit is “relatively
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`current” the ‘704 patent specification acknowledges that the timestamps employed
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`by the database 34 inherently provide on-line status information at some point of
`
`time in the past, and do not provide current, on-line status information as Straight
`
`Path attempts to repeatedly argue in this Appeal. In other words, the on-line
`
`status information kept by the database 34 of the connection server 26 of the ‘704
`
`patent may be up to twenty-four hours old, or even older. This is clearly contrary
`
`to what Straight Path attempts to argue in its brief. (A0695 at 5:25-34; A0695 at
`
`5:39-42).
`
`2.
`
`The ‘704 Patent Does Not Describe Assigning Network
`Addresses To Individual Processes
`
`The disclosure of the ‘704 patent only describes assigning network
`
`addresses to processing units and users and not to individual processes. Straight
`
`6!
`
`
`
`!
`
`!
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`Case: 15-1212 Document: 26 Page: 17 Filed: 04/27/2015
`
`Path again heavily relies on this alleged feature, that assigning network addresses
`
`to individual processes would be required to establish network communication
`
`between such processes. Specifically, Straight Path claims that the ‘704 patent
`
`enables “(2) determining that computer program’s address on the network at the
`
`time the communication is sought…” This again is inaccurate. In support,
`
`Straight Path cites the same portions of the ‘704 patent: (a) A0693 at 1:63-2:10;
`
`(b) A0695 at 5:15-6:16; (c) A0696 at 7:32-36; (d) A0697 at 10:4-37; (e) A0698
`
`at claims 1, 2, 4; (f) A0699 at claim 32; (g) A0670 at claims 33, 38. However,
`
`these cited portions of the ‘704 patent reveal that apart from the challenged
`
`claims themselves, there is absolutely no disclosure in the ‘704 patent of
`
`assigning a network address to a computer program or process. This again
`
`directly contradicts the thrust of Straight Path’s arguments in this Appeal and
`
`completely undermines Straight Path’s validity arguments with respect to the
`
`challenged claims. Moreover, because the network addresses are required for
`
`establishing network connections, a lack of assigned network addresses makes
`
`network communication between individual processes unfeasible. (A2241 at 1-
`
`19). This fact clearly contradicts Straight Path’s arguments.
`
`3.
`
`The ‘704 Patent Does Not Describe Establishing Network
`Connections Between Individual Processes
`
`Straight Path argues that the ‘704 patent enables “(3) establishing a point-
`
`7!
`
`
`
`!
`
`!
`
`Case: 15-1212 Document: 26 Page: 18 Filed: 04/27/2015
`
`to-point communication with that computer program.” (Straight Path’s brief at
`
`5). However, the ‘704 patent throughout its specification, describes establishing
`
`network connections between processing units and not individual processes or
`
`computer programs. Even the portions of the specification of the ‘704 patent
`
`cited by Straight Path lack any reference to connecting individual processes via a
`
`network. Straight Path again cites the very same portions of the ‘704 patent in
`
`support of its inaccurate assertion: (a) A0693 at 1:63-2:10; (b) A0695 at 5:15-
`
`6:16; (c) A0696 at 7:32-36; (d) A0697 at 10:4-37; (e) A0698 at claims 1, 2, 4; (f)
`
`A0699 at claim 32; (g) A0670 at claims 33, 38. However, as discussed in detail
`
`above, the aforesaid portions of the ‘704 patent cited by the Straight Path contain
`
`no alleged disclosure and deal exclusively with connecting processing units, not
`
`processes.
`
`4.
`
`The ‘704 Patent Does Not Describe Determining Current
`Status
`
`Straight Path further argues that the ‘704 patent enables “(1) determining
`
`whether a specific, targeted computer program is currently running and
`
`connected to a network,” while in “both NetBIOS and WINS, finding a
`
`computer’s name indicates only that it previously registered with the name
`
`server; it is no indication that the computer is currently connected to the
`
`network at the time another computer seeks to initiate a communication.”
`
`8!
`
`
`
`!
`
`!
`
`Case: 15-1212 Document: 26 Page: 19 Filed: 04/27/2015
`
`(Straight Path’s brief at 19). This argument misleads and distorts the teachings
`
`of the ‘704 patent, which describes exactly the same registration process as
`
`described in NetBIOS and WINS. (A0695 at 5:25-34, 5:55-60, 6:1-16).
`
`Specifically, the ‘704 patent teaches:
`
`Upon the first user initiating the point-to-point Internet protocol when
`the first user is logged on to Internet 24, the first processing unit 12
`automatically transmits its associated E-mail address and its
`dynamically allocated IP address to the connection server 26. The
`connection server 26 then stores these addresses in the database 34 and
`timestamps the stored addresses using timer 32. The first user operating
`the first processing unit 12 is thus established in the database 34 as an
`active on-line party available for communication using the disclosed
`point-to-point Internet protocol.
`(A0695 at 5:25-34). Moreover, at A0695 at 5:39-42, the ‘704 patent further
`
`teaches:
`
`The connection server 26 may use the timestamps to update the status of
`each processing unit; for example, after 2 hours, so that the on-line status
`information stored in the database 34 is relatively current. Other
`predetermined time periods, such as a default value of 24 hours, may be
`configured by a systems operator.
`
`Thus, just as NetBIOS and WINS, the ‘704 patent teaches the connection
`
`server 26 storing information on the past online status of the processing unit 12 at
`
`the time of the first login by the user. (A0695 at 5:25-34; A0695 at 5:39-42). On
`
`the other hand, there are no teachings in the ‘704 patent of how to ensure that the
`
`current online status of the processing unit 12 is determined.
`
`9!
`
`
`
`!
`
`Case: 15-1212 Document: 26 Page: 20 Filed: 04/27/2015
`
`It should be noted that the timestamps and timer mechanisms referred to in
`
`the above passage of the ‘704 patent (A0695 at 5:39-42) are clearly described as
`
`providing only “on-line status information” that is “relatively current.” Thus, if the
`
`status of each processing unit is updated every 2 hours, a processing unit that went
`
`off-line in any period within the two hour window would be shown in the database
`
`34 as being “on-line” and yet would actually be “off-line”. Hence the
`
`characterization of the on-line status being “relatively current”.
`
`It should be also noted that the ‘704 patent teaches that the connection server
`
`26 may update the user’s status in the database 34 in response to an off-line
`
`message received from the user’s computer when the user disconnects from the
`
`internet. (A0695 at 6:9-14). However, firstly, this technique will not work if the
`
`user computer simply crashes or loses power before sending the off-line message.
`
`In this situation, the database 34 of the connection server 26 would still incorrectly
`
`indicate the user to be on-line. Secondly, NetBIOS discloses an identical
`
`procedure for de-registering a network name. Therefore, this feature also cannot
`
`be used by Straight Path to distinguish the challenged claims from NetBIOS and
`
`WINS.
`
`Thus, contrary to Straight Path’s arguments, the online status monitoring
`
`disclosed by the ‘704 patent and NetBIOS and WINS are identical. Straight
`
`Path’s reliance on this feature for purposes of distinguishing the challenged claims
`
`10!
`
`!
`
`
`
`!
`
`Case: 15-1212 Document: 26 Page: 21 Filed: 04/27/2015
`
`from NetBIOS and WINS therefore clearly fails.
`
`THE IPR PROCEEDINGS
`
`B.
`Sipnet filed its Petition for inter partes review of the ’704 patent on April
`
`11, 2013, asserting that claims 1-7 and 32-42 are invalid over numerous prior art
`
`references. (A0035). On October 11, 2013, the Board granted Sipnet’s Petition in
`
`part, instituting inter partes review of the challenged claims in light of the
`
`NetBIOS and WINS references. (A0192-3). Straight Path did not seek to amend
`
`any of the challenged claims. The Board issued its Final Written Decision on
`
`October 9, 2014, “conclud[ing] that Petitioner has demonstrated by a
`
`preponderance of the evidence that (1) claims 1-7, 32, and 38- 42 are anticipated
`
`by NetBIOS, (2) claims 1-7 and 32-42 are anticipated by WINS, and (3) claims
`
`33-37 are obvious over NetBIOS and WINS.” (A0025). Straight Path did not
`
`request rehearing of the Board’s Final Written Decision. (A0034-A0036).
`
`IV. SUMMARY OF THE ARGUMENT
`
`Straight Path seeks reversal of the Board’s carefully considered and reasoned
`
`decision on the ground that the Board failed to construe two claim terms: “process”,
`
`and “is connected to the computer network”. But Straight Path never requested an
`
`explicit construction of either of these terms during any part of the proceedings
`
`below. Straight Path’s belated attempt at claim construction is an improper
`
`!
`
`11!
`
`
`
`!
`
`Case: 15-1212 Document: 26 Page: 22 Filed: 04/27/2015
`
`invocation of this Court’s de novo review and is nothing more than a thinly veiled
`
`attempt to escape the deference accorded to the Board’s finding of clear
`
`correspondence between the WINS and NetBIOS references and the challenged
`
`claims. This Court should affirm the Board’s decision on this ground alone.
`
`Tellingly, the result below does not change even if this Court adopts Straight
`
`Path’s newly proffered constructions. The Board carefully considered the
`
`challenged claims, the voluminous teachings of the WINS and NetBIOS references,
`
`the testimony of both parties’ experts and the arguments at the oral hearing. As a
`
`result, substantial evidence supports the decision below even with Straight Path’s
`
`constructions.
`
`V. ARGUMENT
`A.
`THE APPLICABLE STANDARDS OF REVIEW
`This Court reviews the Board’s legal conclusions de novo, In re Elsner, 381
`
`F.3d 1125, 1127 (Fed. Cir. 2004), and the Board’s factual findings underlying those
`
`determinations for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.
`
`Cir. 2000). “Substantial evidence . . . means such relevant evidence as a reasonable
`
`mind might accept as adequate to support a conclusion.” Consol. Edison Co. v.
`
`NLRB, 305 U.S. 197, 217 (1938). Anticipation is a question of fact, which this Court
`
`reviews for substantial evidence. In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir.
`
`2009). Obviousness, on the other hand, is a question of law based on underlying
`
`!
`
`12!
`
`
`
`!
`
`Case: 15-1212 Document: 26 Page: 23 Filed: 04/27/2015
`
`factual findings, including what a reference teaches. In re Baxter Int’l, Inc., 678
`
`F.3d 1357, 1361 (Fed. Cir. 2012); Rapoport v. Dement, 254 F.3d 1053, 1060–61
`
`(Fed. Cir. 2001). Specifically, questions of fact include (1) what a prior art
`
`reference teaches and (2) whether a proposed combination of references would
`
`impact a reference’s “principle of operation”. In re Cuozzo Speed Techs., LLC, 778
`
`F.3d 1271, 1282-1283 (
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